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Thanks! I assumed "Take Action" was a simple form, and I didn't want to do that until I read what I was taking action about.

gavinhoward 3y ago
A valid assumption!
jpollock 3y ago
When looking at the proposed rules, I think this is the problematic bit (search for "standing"): "The changes under consideration would make clear that the Board would discretionarily deny any petition for IPR or PGR filed by an entity that: (1) is a for-profit entity; (2) has not been sued on the challenged patent or has not been threatened with infringement of the challenged patent in a manner sufficient to give rise to declaratory judgment standing; (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market; and (4) does not have a substantial relationship with an entity that falls outside the scope of elements (1)–(3)."
- pclmulqdq 3y ago
  Why does the EFF have a problem with a rule about for-profit entities? Aren't they a non-profit?
  - strbean 3y ago
    These rules say that a company cannot preemptively challenge a bogus patent before developing something that would infringe that patent. This would have a chilling effect on the challenge of bogus patents, which is bad for creativity and innovation, and therefore against the EFF's mission.
    - pclmulqdq 3y ago
      You should read the rules. They only apply to patents that currently have ongoing litigation and parties that are not involved in the litigation or likely to produce a product. They are a lot more narrow than you think.
      - strbean 3y ago
        > They only apply to patents that currently have ongoing litigation No they don't. The allow the USPTO to prevent initiation of proceedings by denying petitions for IPR/PGR. The proposed discretionary denial criteria do not require that there is other ongoing litigation. Contrived scenario: - My company makes spoons, but I'm toying with the idea of pivoting into making keyboards. - PatentTrollCo. is granted a patent on "a button that is connected electronically to a computing device." - My company files for a petition for PGR on the grounds that this is not novel. - The petition is denied: it meets all the criteria for discretionary denial listed in the comment above [1]. [1] https://news.ycombinator.com/item?id=36198908 https://news.ycombinator.com/item?id=36198908
        pclmulqdq 3y ago
        That comment is wrong. The rules clearly state that there has to be ongoing litigation on the patent. Otherwise, basically nobody could IPR anything until they get sued.
        strbean 3y ago
        > That comment is wrong. It is a direct quote from the Federal Register notice published by the USPTO. The quote, with a bit more context: > The changes under consideration would make clear that the Board would discretionarily deny any petition for IPR or PGR filed by an entity that: (1) is a for-profit entity; (2) has not been sued on the challenged patent or has not been threatened with infringement of the challenged patent in a manner sufficient to give rise to declaratory judgment standing; (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market; and (4) does not have a substantial relationship with an entity that falls outside the scope of elements (1)–(3). This seems pretty clear. > The rules clearly state that there has to be ongoing litigation on the patent. Can you direct me to the part of the new rules that state there has to be ongoing litigation? There are entire sections regarding parallel petitions and parallel litigation, but they are clearly presented as sufficient cause for discretionary denial on their own, and not as requirements for discretionary denial based on the other criteria referenced. Unless you're saying this rule will only apply to petitions where there are both parallel petitions AND parallel litigation (they are listed and discussed separately) AND the other mentioned criteria are referenced. > Otherwise, basically nobody could IPR anything until they get sued. Or demonstrate that the petitioner does not satisfy point 3) above: > (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market This is why the EFF is worried.
  - indymike 3y ago
    The rule is trying to prevent commercial entities from having access to the IPR process. The EFF sees this as a threat to civil liberties in the digital world... From the EFF's About Us page: "The Electronic Frontier Foundation is the leading nonprofit organization defending civil liberties in the digital world."
- jpollock 3y ago
  There is also this - "intent to commercialize" would preclude most third parties. "The Board should first determine whether a petitioner meets the first three criteria—standing, intent to commercialize and privy/real party in interest—before moving to the compelling merits analysis."

gavinhoward 3y ago

A valid assumption!

jpollock 3y ago

When looking at the proposed rules, I think this is the problematic bit (search for "standing"): "The changes under consideration would make clear that the Board would discretionarily deny any petition for IPR or PGR filed by an entity that: (1) is a for-profit entity; (2) has not been sued on the challenged patent or has not been threatened with infringement of the challenged patent in a manner sufficient to give rise to declaratory judgment standing; (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market; and (4) does not have a substantial relationship with an entity that falls outside the scope of elements (1)–(3)."

pclmulqdq 3y ago
Why does the EFF have a problem with a rule about for-profit entities? Aren't they a non-profit?
- strbean 3y ago
  These rules say that a company cannot preemptively challenge a bogus patent before developing something that would infringe that patent. This would have a chilling effect on the challenge of bogus patents, which is bad for creativity and innovation, and therefore against the EFF's mission.
  - pclmulqdq 3y ago
    You should read the rules. They only apply to patents that currently have ongoing litigation and parties that are not involved in the litigation or likely to produce a product. They are a lot more narrow than you think.
    - strbean 3y ago
      > They only apply to patents that currently have ongoing litigation No they don't. The allow the USPTO to prevent initiation of proceedings by denying petitions for IPR/PGR. The proposed discretionary denial criteria do not require that there is other ongoing litigation. Contrived scenario: - My company makes spoons, but I'm toying with the idea of pivoting into making keyboards. - PatentTrollCo. is granted a patent on "a button that is connected electronically to a computing device." - My company files for a petition for PGR on the grounds that this is not novel. - The petition is denied: it meets all the criteria for discretionary denial listed in the comment above [1]. [1] https://news.ycombinator.com/item?id=36198908 https://news.ycombinator.com/item?id=36198908
      - pclmulqdq 3y ago
        That comment is wrong. The rules clearly state that there has to be ongoing litigation on the patent. Otherwise, basically nobody could IPR anything until they get sued.
        strbean 3y ago
        > That comment is wrong. It is a direct quote from the Federal Register notice published by the USPTO. The quote, with a bit more context: > The changes under consideration would make clear that the Board would discretionarily deny any petition for IPR or PGR filed by an entity that: (1) is a for-profit entity; (2) has not been sued on the challenged patent or has not been threatened with infringement of the challenged patent in a manner sufficient to give rise to declaratory judgment standing; (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market; and (4) does not have a substantial relationship with an entity that falls outside the scope of elements (1)–(3). This seems pretty clear. > The rules clearly state that there has to be ongoing litigation on the patent. Can you direct me to the part of the new rules that state there has to be ongoing litigation? There are entire sections regarding parallel petitions and parallel litigation, but they are clearly presented as sufficient cause for discretionary denial on their own, and not as requirements for discretionary denial based on the other criteria referenced. Unless you're saying this rule will only apply to petitions where there are both parallel petitions AND parallel litigation (they are listed and discussed separately) AND the other mentioned criteria are referenced. > Otherwise, basically nobody could IPR anything until they get sued. Or demonstrate that the petitioner does not satisfy point 3) above: > (3) is not otherwise an entity that is practicing, or could be alleged to practice, in the field of the challenged patent with a product or service on the market or with a product or service in which the party has invested to bring to market This is why the EFF is worried.
- indymike 3y ago
  The rule is trying to prevent commercial entities from having access to the IPR process. The EFF sees this as a threat to civil liberties in the digital world... From the EFF's About Us page: "The Electronic Frontier Foundation is the leading nonprofit organization defending civil liberties in the digital world."
jpollock 3y ago
There is also this - "intent to commercialize" would preclude most third parties. "The Board should first determine whether a petitioner meets the first three criteria—standing, intent to commercialize and privy/real party in interest—before moving to the compelling merits analysis."